UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`Case IPR2020-01139
`Patent 8,382,186
`____________
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Review Processing System
`
`PATENT OWNER’S OBJECTIONS UNDER 37 C.F.R. § 42.64 TO
`PETITIONER’S EVIDENCE SUBMITTED WITH PETITIONER’S REPLY
`
`
`
`
`
`1
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`Case IPR2020-01139
`Patent 8,382,186
`____________
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Review Processing System
`
`PATENT OWNER’S OBJECTIONS UNDER 37 C.F.R. § 42.64 TO
`PETITIONER’S EVIDENCE SUBMITTED WITH PETITIONER’S REPLY
`
`
`
`
`
`1
`
`
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner MacNeil IP LLC (“Patent
`
`Owner”) respectfully submits the following objections to evidence filed by
`
`Petitioner in conjunction with Petitioner’s Reply to Patent Owner’s Response (Paper
`
`60). These objections are timely, as they are being made within five business days
`
`of service of the evidence (August 24, 2021).
`
`The following chart lists Patent Owner’s objections to the admissibility of
`
`certain evidence (identified below) that is included within or accompanies the
`
`Petitioner’s Reply and the basis for those objections:
`
`Objected to Exhibit
`
`Exhibits 1046-1050
`
`Basis for Objection
`37 C.F.R. § 42.53: Patent Owner
`
`objects to Exhibits 1046-1050, because
`
`the exhibits do not satisfy the
`
`requirements of 37 C.F.R. § 42.53.
`
`The exhibits do not have the proper
`
`certification, pursuant to 37 C.F.R. §
`
`42.53(f)(6). 37 C.F.R. § 42.53(f)(6)
`
`states: “The officer shall prepare a
`
`certified transcript by attaching a
`
`certificate in the form of an affidavit
`
`signed and sealed by the officer to the
`
`
`
`2
`
`
`
`Objected to Exhibit
`
`Basis for Objection
`transcript of the deposition.” But none
`
`of the exhibits contains a certificate “in
`
`the form of an affidavit.” An affidavit,
`
`as defined in 37 C.F.R. § 42.2, requires
`
`an affidavit or declaration under 37
`
`C.F.R. § 1.68 or 28 U.S.C. § 1746—the
`
`requirements of neither have been
`
`satisfied by the officer’s certificate
`
`here.
`
`Next, 37 C.F.R. § 42.53(f)(6)(iii)
`
`requires the certificate to state: “The
`
`name of the person who recorded the
`
`testimony, and if the officer did not
`
`record it, whether the testimony was
`
`recorded in the presence of the officer;”
`
`There is no explicit statement in the
`
`certificate identifying who recorded the
`
`testimony. Thus, the certificate does not
`
`satisfy 37 C.F.R. § 42.53(f)(6).
`
`
`
`3
`
`
`
`Objected to Exhibit
`
`Basis for Objection
`In addition, 37 C.F.R. § 42.53(f)(6)(vii)
`
`requires the certificate to state: “If a
`
`witness refuses to read or sign the
`
`transcript,
`
`the circumstances under
`
`which
`
`the witness
`
`refused.” By
`
`implication of this requirement and due
`
`to
`
`the requirements of 37 C.F.R.
`
`§ 42.53(f)(5), the certificate must either
`
`certify a properly signed transcript
`
`under 37 C.F.R. § 42.53(f)(5) or must
`
`contain the required explanation of the
`
`circumstances under which the witness
`
`refused to sign the transcript. Because
`
`none of the exhibits contains a signature
`
`of the witness in the required form or the
`
`required statement in the certificate, the
`
`certificate
`
`does
`
`not meet
`
`the
`
`requirements of 37 C.F.R. § 42.53(f)(6).
`
`
`
`4
`
`
`
`Objected to Exhibit
`
`Basis for Objection
`exhibits
`also
`violate
`
`the
`
`The
`
`requirements of 37 C.F.R. § 42.53(f)(5).
`
`Specifically, each of the witnesses
`
`submitted a declaration subject
`
`to
`
`specific errata specified by the witness.
`
`Because
`
`37 C.F.R.
`
`§ 42.53(f)(5)
`
`requires that the witness shall read and
`
`sign (in the form of an affidavit) a
`
`transcript of
`
`the deposition,
`
`that
`
`declaration necessarily becomes part of
`
`the transcript and must be submitted
`
`along with
`
`the
`
`remainder of
`
`the
`
`transcript for
`
`the
`
`transcript
`
`to be
`
`admissible under the Board’s rules. In
`
`the
`
`identified
`
`exhibits, Petitioner
`
`omitted the signed declaration of the
`
`witness, which constitutes the affidavit
`
`required by 37 C.F.R. § 42.53(f)(5).
`
`
`
`5
`
`
`
`Objected to Exhibit
`
`Basis for Objection
`FRE 106: Patent Owner further objects
`
`to Exhibits 1046-1050, because the
`
`exhibits are incomplete, as they do not
`
`contain errata or the witness’s signed
`
`affidavit pursuant to 37 C.F.R. §
`
`42.53(f)(5) or a compliant certificate
`
`pursuant to 37 C.F.R. § 42.53(f)(5).
`
`FRE 801, 802: Patent Owner further
`
`objects to Exhibits 1046-1050, because
`
`the exhibits are inadmissible hearsay—
`
`as the deposition transcripts that
`
`constitute the exhibits were not
`
`submitted in accordance with the rules
`
`(e.g., 37 C.F.R. §§ 42.53(f)(5)-(6)).
`
`FRE 901, 902: Patent Owner also
`
`objects to Exhibits 1046-1050, because
`
`the exhibits are incomplete and not
`
`properly authenticated—as the
`
`deposition transcripts that constitute
`
`
`
`6
`
`
`
`Objected to Exhibit
`
`Basis for Objection
`the exhibits lack the affidavit required
`
`by the rules (e.g., 37 C.F.R. §§
`
`42.53(f)(5)-(6)).
`
`Exhibit 1041, 1042, 1044
`
`37 C.F.R. § 42.53 and FRE 106, 801,
`
`802, 901, 902: Patent Owner objects to
`
`the contents of Exhibits 1041, 1042,
`
`and 1044 to the extent that the
`
`declarants in the respective
`
`declarations rely on one or more of
`
`Exhibits 1046-1050.
`
`FRE 602: Patent Owner Objects to
`
`Exhibit 1041, including at least ¶¶ 30-
`
`31, 40-47, 163-175, because Petitioner
`
`did not introduce sufficient evidence to
`
`establish that the witness has personal
`
`knowledge of the matters discussed.
`
`FRE 701: Patent Owner Objects to
`
`Exhibit 1041, including at least ¶¶ 30-
`
`31, 40-47, 163-175, as improper
`
`
`
`7
`
`
`
`Objected to Exhibit
`
`Basis for Objection
`testimony by a lay witness under FRE
`
`701. Petitioner has not established the
`
`declarant as an expert witness in the
`
`subject matter discussed in ¶¶ 30-31,
`
`40-47, 163-175.
`
`Exhibits 1039, 1040, 1057-1062,
`
`FRE 801, 802: To the extent Petitioner
`
`1075, 1078, 1079, 1083-1085, 1087-
`
`relies on the contents of these
`
`1091, 1093
`
`documents for the truth of the matter
`
`asserted, Patent Owner objects to
`
`Exhibits 1039, 1040, 1057-1062, 1075,
`
`1078, 1079, 1083-1085, 1087-1091,
`
`1093 as inadmissible hearsay.
`
`FRE 901, 902: Patent Owner objects to
`
`Exhibits 1039, 1040, 1057-1062, 1075,
`
`1078, 1079, 1083-1085, 1087-1091,
`
`1093 as not properly authenticated,
`
`while there is no evidence that the
`
`exhibits are self-authenticating.
`
`
`
`8
`
`
`
`Basis for Objection
`Objected to Exhibit
`Exhibits 1039, 1040, 1050, 1063-1093 FRE 401, 402, 403: Patent Owner
`
`objects to Exhibits 1039, 1040, 1050,
`
`1063-1093, because they are not cited
`
`in the Reply and are not relevant to any
`
`argument in the Reply.
`
`Patent Owner further objects to
`
`Exhibits 1039, 1040, 1050, 1075, 1084,
`
`1085, 1087, because they are neither
`
`cited in the Reply nor in any of the
`
`accompanying declarations and are not
`
`relevant to any argument in the Reply.
`
`
`
`Dated: August 31, 2021
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /David G. Wille/
`David G. Wille
`Reg. No. 38,363
`
`
`
`Lead Counsel for Patent Owner MacNeil
`IP LLC
`
`
`
`
`
`9
`
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. § 42.6(e), the undersigned certifies that on the
`
`31st day of August 2021 a complete and entire copy of this PATENT OWNER’S
`
`OBJECTIONS UNDER 37 C.F.R. § 42.64 TO PETITIONER’S EVIDENCE
`
`SUBMITTED WITH PETITIONER’S REPLY was served on Petitioner via
`
`email at the following correspondence addresses:
`
` walters@LoweGrahamJones.com;
`
` tpowers-PTAB@sternekessler.com;
`
` jfitzsimmons-PTAB@sternekessler.com;
`
` smerrill-PTAB@sternekessler.com;
`
` bamert@LoweGrahamJones.com; and
`
` PTAB@sternekessler.com.
`
`
`
`
`Date: August 31, 2021
`
`
`
`/Tracy Engberg/
`Tracy Engberg
`Senior Paralegal
`
`BAKER BOTTS L.L.P.
`
`
`
`10
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
